National Board of Patents and Registration of Finland - PRH fileNBPR PPH Guidelines for US filers...
Transcript of National Board of Patents and Registration of Finland - PRH fileNBPR PPH Guidelines for US filers...
NBPR PPH Guidelines for US filers
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Procedures to file a request to the National Board of Patents and Registration of Finland
for the Patent Prosecution Highway Pilot Program between the
United States Patent and Trademark Office
and the National Board of Patents and Registration of Finland
Request to the NBPR
An applicant should file a request for accelerated examination under the Patent Prosecution
Highway (PPH) to the National Board of Patents and Registration of Finland (NBPR) by
submitting a letter requesting accelerated examination under the PPH accompanied by the
relevant supporting documents. The requirements for an application to the NBPR for accelerated
examination under either the PPH or the PCT-PPH are given in sections 1 and 4 and relevant
supporting documentation is discussed in sections 2 and 5.
Part 1: PPH using the national work products from USPTO
1. Requirements for requesting accelerated examination under the PPH pilot program at the NBPR
An application which is filed with the NBPR and which fulfills all the following requirements is
eligible for accelerated examination under the PPH.
1.1 The NBPR application (including a PCT national phase application) is either:
(A) an application which validly claims priority under the Paris Convention to the USPTO
application(s) (examples are provided in Annex 2: figures A, B, C, D, E, and F), or
(B) a PCT national phase application without priority claim (an example is provided in Annex 2:
figure G), or
(C) an application which validly claims priority under the Paris Convention to the PCT
application(s) without priority claim (examples are provided in Annex 2: figures F, H, and I).
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The NBPR application, which validly claims priority to multiple USPTO or PCT applications,
or which is the divisional application validly based on the originally filed application that is
included in (A) through (C) above, is also eligible.
1.2 At least one corresponding application exists in the USPTO and has one or more claims that are determined to be patentable/allowable by the USPTO
Claims clearly identified to be patentable in the latest office action at examination stage are
able to function as the basis for a request for accelerated examination under the PPH pilot
program, even if the application, which includes those claims is not granted for patent yet.
[Note]
Where the USPTO application that contains the patentable/allowable claims is not the same
application for which priority is claimed in the NBPR application, the applicant must identify the
relationship between the USPTO application that contains the patentable/allowable claims and
the USPTO priority application claimed in the NBPR application. (See examples D and E in
Annex 2.)
1.3 All claims in the NBPR application (for which an accelerated examination under the PPH pilot program is requested) must sufficiently correspond to one or more of those claims determined to be patentable/allowable in the USPTO.
Claims are considered to sufficiently correspond where both claims have a common technical
feature which made the claims patentable over the prior art in the USPTO application. In this
regard, a claim which has an additional component on the claim determined to be patentable
in the USPTO, or which apart from claim format is the same as the claim determined to be
patentable in the USPTO, will be considered to sufficiently correspond.
Note that when claims are determined to be patentable by the USPTO by making amendment
to claims, the claims in the NBPR also must be amended in a similar way to sufficiently
correspond to the allowable/patentable claims in the USPTO application. (See example in
Annex 1.)
1.4 The NBPR has not yet issued a “Communication of Approval”
The NBPR has not yet issued a “Communication of Approval.” (The heading of the
communication is “Hyväksyvä välipäätös.”)
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2. Documents to be submitted to file a request for accelerated examination under the PPH
An applicant who requests for accelerated examination under the PPH should submit a request
form along with the documents listed below.
[Note]
Even when it is not needed to submit documents below, the name of the documents must be
listed in the request form.
2.1 A copy of the office action(s) relating to the corresponding USPTO application(s)
The term “office actions” here used refers to the correspondence sent to the applicant or the
applicant’s representative from the USPTO examiner. The applicant can either provide the
office actions together with the request for acceleration under the PPH or request that the
NBPR obtain the documents from the USPTO Public PAIR system.
It is noted that applicants must also submit copies of any office actions (which are relevant to
patentability) from the USPTO application(s) issued after the grant of the request for partici-
pation in the PPH pilot program in the NBPR (especially where USPTO might have reversed a
prior holding of allowability/patentability).
2.2 A copy of the claims determined to be patentable by the USPTO including any subsequent amended claims found to be patentable by the USPTO
The applicant can either provide the claims together with the request for acceleration under
the PPH or request that the NBPR obtain the claims from the USPTO Public PAIR system.
2.3 A copy of the references cited by the USPTO examiner
If the references are patent documents, it will not be necessary to submit these documents, as
they will usually be available to the NBPR. If the NBPR does not have access to the relevant
patent documents, the applicant must submit these documents at the request of the NBPR.
Non-patent literature must always be submitted.
Submission of translation of the references is not required. However, applicants will be free to
file translations as part of the supporting documentation when initially requesting accelerated
examination under the PPH to allow prompt consideration of the citations if the applicants so
desire.
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2.4 A completed claim correspondence table showing the relationship between the claims of the NBPR application for accelerated examination under the PPH and the claims of the corresponding USPTO application considered patentable by the USPTO.
Sufficient correspondence of claims occurs where the claims are of the same or similar scope
as defined above in section 1.3. The claim correspondence table must indicate how all the
claims in the NBPR application correspond to the patentable claims in the USPTO application
as shown in Annex 1. The claim correspondence table must be written in either English or
Finnish.
Any claims amended or added after the grant of the request for participation in the PPH pilot
program must sufficiently correspond to one or more allowable/patentable claims in the
USPTO application(s). The applicant is required to submit a new claims correspondence table
along with the amendments. If the amended or newly added claims do not sufficiently corre-
spond to the allowable/patentable claims in the USPTO application(s), the amendment will not
be entered.
2.5 When the US file wrapper is not available via USPTO Public PAIR
In those rare situations where the US application has not been published, and therefore the
US file wrapper is not available via the USPTO Public PAIR system, the applicant will be
responsible for providing the necessary documents to the NBPR.
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Part 2: PPH using the PCT international work products
4. Requirements
The application which is filed with the NBPR and on which the applicant files a request for an
accelerated examination under the PCT-PPH must satisfy the following requirements:
4.1 The relationship between the application and the corresponding international application
The relationship between the application and the corresponding international application
satisfies one of the following requirements (including the case that the Office of the application
is the same as the ISA/IPEA of the corresponding international application):
(A) The application is a national phase application of the corresponding international
application (examples are provided in Annex 3: figures A, A’, and A’’).
(B) The application is a national application as a basis of the priority claim of the corresponding
international application (example is provided in Annex 3: figure B).
(C) The application is a national phase application of an international application claiming
priority from the corresponding international application (example is provided in Annex 3: figure
C).
(D) The application is a national application claiming foreign/domestic priority from the
corresponding international application (example is provided in Annex 3: figure D).
(E) The application is the derivative application (divisional application, application claiming
internal priority, etc.) of the application which satisfies one of the above requirements (A) – (D)
(examples are provided in Annex 3: figures E1 and E2).
4.2 The application has one or more claims that are determined to be patentable/allowable in the work product of the corresponding PCT application
The latest work product in the international phase of a PCT application corresponding to the
application (“international work product”), namely the Written Opinion of International
Searching Authority (WO/ISA), the Written Opinion of International Preliminary Examining
Authority (WO/IPEA) or the International Preliminary Examination Report (IPER), indicates at
least one claim as patentable/allowable (from the aspect of novelty, inventive steps and
industrial applicability). The applicant cannot file a request under PCT-PPH on the basis of an
International Search Report (ISR) only.
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In case any observation is described in Box VIII of WO/ISA, WO/IPEA or IPER which forms the
basis of a PCT-PPH request, the applicant must explain why the claim(s) is/are not subject to
the observation whether or not an amendment is submitted to correct the observation. The
application will not be eligible for participating in PCT-PPH pilot program if the applicant does
not explain why the claim(s) is/are not subject to the observation. In this regard, however, it
does not affect the decision on the eligibility of the application, whether the explanation is
adequate and/or whether the amendment submitted overcomes the observation.
Note that the ISA and the IPEA which produced the WO/ISA, WO/IPEA and the IPER must be
the USPTO, but, if priority is claimed, the priority claim can be to an application in any Office,
see Annex 3, example A’ (application ZZ can be any national application).
4.3 Claim correspondence
All claims on file, as originally filed or as amended, for examination under the PCT-PPH must
sufficiently correspond to one or more of those claims indicated as patentable/allowable in the
latest international work product of the corresponding international application.
Claims are considered to sufficiently correspond where both claims have a common technical
feature which made the claims patentable over the prior art in the latest international work
product of the corresponding international application. In this regard, a claim which has an
additional component on the claim determined to be patentable in the latest international work
product, or which is the same apart from claim format as the claim determined to be patentable
in the latest international work product, will be considered to sufficiently correspond.
A claim of the application which introduces a new/different category of claims to those claims
indicated as patentable/allowable in the latest international work product is not considered to
sufficiently correspond. For example, the claims indicated as patentable/allowable in the latest
international work product only contain claims to a process of manufacturing a product, then
the claims of the application are not considered to sufficiently correspond if the claims of the
application introduce product claims that are dependent on the corresponding process claims.
Any claims amended or added after the grant of the request for participation in the PCT-PPH
pilot program need to sufficiently correspond to the claims indicated as patentable/allowable in
the latest international work product.
4.4 The office of the application has not yet issued a “Communication of Approval”
The NBPR has not yet issued a “Communication of Approval.” (The heading of the
communication is “Hyväksyvä välipäätös.”)
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5. Documents to be submitted to file a request for accelerated examination under the PCT-PPH
The applicant must submit the following documents attached to the request form in filing a request under
PCT-PPH.
5.1 A copy of the latest international work product of the corresponding international application
In case the application satisfies the relationship 4.1 (A), the applicant does not need to submit a copy
of the International Preliminary Report on Patentability (IPRP) because a copy of these documents is
already available in the file-wrapper of the application. In addition, if the copy of the latest international
work product is available via PATENTSCOPE®*, an applicant does not need to submit these
documents, unless otherwise requested by the patent Office (WO/ISA and IPER are usually available
as “IPRP Chapter I” and “IPRP Chapter II” respectively in 30 months after the priority date.)
5.2 A copy of a set of claims which the latest international work product of the corresponding international application indicated as patentable/allowable
A copy of a set of claims which the latest international work product of the corresponding
international application indicated as patentable/allowable, and a copy of the English or
Finnish translation.
If the copy of the set of claims which are indicated as patentable/allowable is available via
PATENTSCOPE® (or the international Patent Gazette has been published), an applicant does
not need to submit this document, unless otherwise requested by the patent Office. Where
translations of the patentable/allowable claims are necessary, they must be submitted by the
applicant since PATENTSCOPE® does not provide them.
5.3 Copies of references cited in the latest international work product of the corresponding international application
If the references are patent documents, the applicant does not have to submit them because
the office of the application usually has access to them. When the office of the application
does not have access to the patent document, the applicant has to submit the patent
document at the examiner’s request. Non-patent literature must always be submitted.
Submission of translation of the references is not required. However, applicants will be free to
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file translations as part of the supporting documentation when initially requesting accelerated
examination under the PPH to allow prompt consideration of the citations if the applicants so
desire.
5.4 Claim correspondence table
The applicant must submit a claim correspondence table to explain the correspondence of
claims determined to be patentable/allowable in the latest work product of the corresponding
international application and all claims in the application.
When the applicant has already submitted the documents mentioned above in paragraphs 5.1 – 5.4 to
the patent Office in an examination procedure of the patent family application, through simultaneous or
past procedures, the applicant may incorporate the documents by reference and is thus not required to
attach the documents.
5.5 Request form
An applicant should submit a request form (See Annex 5) for the accelerated examination
under the PCT-PPH along with the documents referred to in paragraphs 5.1-5.4.
Procedure for the accelerated examination under the PPH
The applicant files a letter requesting accelerated examination under the PPH Pilot Program to
the NBPR, including the relevant supporting documents and a completed request form (for PPH
see Annex 4 and for PCT-PPH see Annex 5).
The NBPR decides whether the application can be entitled the status of accelerated examination
under the PPH when NBPR receives a request with the documents stated above. When NBPR
decides that a request is acceptable, the application is assigned a special status for accelerated
examination.
If the request does not meet all the requirements set forth above, the applicant will be notified
and the defects in the request will be identified. The applicant will be given opportunity to correct
the request. If the defect(s) are not corrected, the applicant will be notified, and the application
will await action in its regular turn.
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ANNEX 1 Examples for the claim correspondence
The claims in the following cases are considered to “sufficiently correspond”. EX.1
USPTO claims
NBPR claims
Comment
1 1 The NBPR claim has the additional component on the USPTO granted claim.
A system for presenting a container storing at least one article to a processing tool, comprising:
(a) a load port, including:a frame having an opening;a support structure being adapted to receive a
container, anda drive mechanism for moving said support structure
substantially vertically between a first height and a second height; and
(b) a conveyor for movably supporting the container substantially along a container transport plane;
wherein a container traveling on said conveyer moves unobstructed over said support structure when said support structure is located in said second height,
wherein the container traveling unobstructed does not contact said support structure while traveling over said support structure located at said second height,
wherein said support structure, when located at said second height, is located below said transport plane,
wherein said support structure, when located at said first height, is located above said transport plane*.
A system for presenting a container storing at least one article to a processing tool, comprising:
(a) a load port, including:a frame having an opening;a support structure being adapted to receive a
container, anda drive mechanism for moving said support structure
substantially vertically between a first height and a second height; and
(b) a conveyor for movably supporting the container substantially along a container transport plane;
wherein a container traveling on said conveyer moves unobstructed over said support structure when said support structure is located in said second height,
wherein the container traveling unobstructed does not contact said support structure while traveling over said support structure located at said second height,
wherein said support structure, when located at said second height, is located below said transport plane.
OSF claimOFF granted claim
A system for presenting a container storing at least one article to a processing tool, comprising:
(a) a load port, including:a frame having an opening;a support structure being adapted to receive a
container, anda drive mechanism for moving said support structure
substantially vertically between a first height and a second height; and
(b) a conveyor for movably supporting the container substantially along a container transport plane;
wherein a container traveling on said conveyer moves unobstructed over said support structure when said support structure is located in said second height,
wherein the container traveling unobstructed does not contact said support structure while traveling over said support structure located at said second height,
wherein said support structure, when located at said second height, is located below said transport plane,
wherein said support structure, when located at said first height, is located above said transport plane*.
A system for presenting a container storing at least one article to a processing tool, comprising:
(a) a load port, including:a frame having an opening;a support structure being adapted to receive a
container, anda drive mechanism for moving said support structure
substantially vertically between a first height and a second height; and
(b) a conveyor for movably supporting the container substantially along a container transport plane;
wherein a container traveling on said conveyer moves unobstructed over said support structure when said support structure is located in said second height,
wherein the container traveling unobstructed does not contact said support structure while traveling over said support structure located at said second height,
wherein said support structure, when located at said second height, is located below said transport plane.
OSF claimOFF granted claim
*This additional part is NOT included in the OFF granted claim but it is included in the description of the OFF application
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EX.2 USPTO claims
NBPR claims
Comment
1 1 Same
none 2 The NBPR claim2 is dependent on the NBPR claim1, which has been granted at USPTO.
2. The nitride-based semiconductor device according to claim 1, wherein said first semiconductor layer includes an n-type dopant.*
2. (None)
1. (Same)1. A nitride-based semiconductor device comprising: a first semiconductor layer, consisting of either an n-type nitride-based semiconductor layer having a wurtzitestructure or an n-type nitride-based semiconductor substrate having a wurtzite structure; and an n-side electrode formed on a back surface of said first semiconductor layer, wherein a dislocation density is not more than 1*109 cm2
in the vicinity of the interface between said first semiconductor layer and said n-side electrode, and contact resistance between said n-side electrode and said first semiconductor layer is not more than 0.05 Ωcm2
OSF claimOFF granted claim
2. The nitride-based semiconductor device according to claim 1, wherein said first semiconductor layer includes an n-type dopant.*
2. (None)
1. (Same)1. A nitride-based semiconductor device comprising: a first semiconductor layer, consisting of either an n-type nitride-based semiconductor layer having a wurtzitestructure or an n-type nitride-based semiconductor substrate having a wurtzite structure; and an n-side electrode formed on a back surface of said first semiconductor layer, wherein a dislocation density is not more than 1*109 cm2
in the vicinity of the interface between said first semiconductor layer and said n-side electrode, and contact resistance between said n-side electrode and said first semiconductor layer is not more than 0.05 Ωcm2
OSF claimOFF granted claim
*This additional part is NOT included in the OFF granted claim but it is included in the description of the OFF application
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ANNEX 2 Examples of NBPR applications eligible for PPH
Figure A:
Figure B:
* DO – Designated Office
USPTO application
Indication of patentable claim(s) or Grant Priority
claim
Request for PPH
PCT application
DO*/FI application
USPTO application
Indication of patentable claim(s) or Grant
Priority claim
Request for PPH NBPR
application
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Figure C: Figure D:
NBPR application
Request for PPH
USPTO2 application
Priority claim Priority
claim
USPTO1 application
Indication of patentable claim(s) or Grant
USPTO1 application
USPTO2 application
Indication of patentable claim(s) or Grant
NBPR application
Domestic priority claim
Request for PPH
Priority claim
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Figure E: Figure F:
NBPR2 application
Request for PPH
NBPR1 application
Priority claim
Divisional
USPTO application
Indication of patentable claim(s) or Grant
PCT application
Priority claim
Request for PPH
PCT application
Indication of patentable claim(s) or Grant
DO/FI application
DO/US application
Without priority claim
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Figure G:
Figure H: Figure I:
PCT application
Indication of patentable claim(s) or Grant
Request for PPH
DO/USPTO application
DO/FI application
PCT application
Priority claim
Request for PPH NBPR
application
Indication of patentabe claim(s) or Grant
DO/US application
PCT application
Priority claim Request
for PPH PCT
application
Indication of patentabe claim(s) or Grant
DO/USPTO application
DO/FI application
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Figure J:
USPTO application
Priority claim
Request for PPH
PCT application
Indication of patentabe claim(s) or Grant
DO/FI application
DO/US application
Without priority claim
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ANNEX 3 Examples of the applications eligible for PCT-PPH
PCT RO/ --
DO/FI
ISA/USIPEA/US DO
DO
PPH
WOIPER
ZZ Application
Priority Claim
(A ’) The application is a national phase application of the corresponding international application.
(The corresponding international application claims priority from a national application.)
OK
PCT RO/--
DO/FI
ISA/USIPEA/US DO
DO
PPH
WOIPER
(A) The application is a national phase application of the corresponding international application.
OK
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PCTRO/--
ISA/USIPEA/US
PPH
WOIPER
NBPR application
Priority Claim
(B) The application is a national application as a basis of the priority claim of the correspondinginternational application.
OK
PCTRO/--
ISA/USIPEA/US
Priority Claim
PCT RO/--
DO/FI
ISA/ --
DO
DO
PPH WO
IPER
(A ’’) The application is a national phase application of the corresponding international application.
(The corresponding international application claims priority from an international application.)
OK
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PCT RO/--
ISA/USIPEA/US
WOIPER
Priority Claim
PPH
(D) The application is a national application claiming foreign/domestic priority from the correspondinginternational application.
OK
NBPR application
PCTRO/--
ISA/USIPEA/US
WOIPER
Priority Claim
PCT RO/--
DO/FI
ISA/-- DO
DO
PPH
OK
(C) The application is a national phase application of an international application claiming priority from thecorresponding international application.
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PCT RO/--
ISA/USIPEA/US
PPH WOIPER
NBPR application
Priority Claim
(E2) The application is an application claiming domesticpriority from an application which satisfiesthe requirement (B).
NBPR application
Priority Claim
OK
PCT RO/ --
DO/FI
ISA/USIPEA/US
DO
DOPPH
WOIPER
(E1) The application is a divisional application ofan application which satisfies the requirement (A).
NBPR application
Divisional application
OK
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ANNEX 4
PPH REQUEST Request for Accelerated Examination at the NBPR Under the Patent Prosecution Highway Pilot Program Between the NBPR and the USPTO 1 NBPR application number:
Corresponding USPTO application number(s): 2 Either:
a) Copy of USPTO office action(s) attached: or b) USPTO office action(s) available via Public PAIR: or c) USPTO office action(s) on file from previous PPH application: NBPR application number:
3 Either: a) Copy of claims of corresponding USPTO application attached: or b) Claims of corresponding USPTO application available via Public PAIR: or c) USPTO application claims on file from previous PPH application: NBPR application number:
4 Claim correspondence table completed:
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Claim correspondence table: NBPR application claims
Patentable claims in USPTO applications
Explanation regarding the correspondence
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ANNEX 5 PCT-PPH REQUEST
Request for Accelerated Examination at the NBPR using the PCT international work products under the Patent Prosecution Highway Pilot Program Between the NBPR and the USPTO (PCT-PPH pilot program) FI application number: Corresponding PCT application number: For the purposes of participation in the PPH, the following documents should be attached/are required:
1. Either: 1.1 A copy of WO-ISA or IPER and translation thereof in English or Finnish or
Request to obtain documents in 1.1 via PATENTSCOPE®
2. Either: 2.1 A copy of all claims determined to be patentable/allowable by the ISA or IPEA or Request to obtain documents in 2.1 via the PATENTSCOPE®
3. Translation of the documents in 2. in English or Finish.
4. Copies of all documents cited in the WO-ISA or IPER (except for patent documents) 5. Claims correspondence table
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NBPR application claim Corresponding PCT claim Comments
NBPR PPH Guidelines for US filers
This notice is accepted by
Date: /3 , /. Ao / /RAUNI HAGMANDirector GeneralNational Board of Patents andRegistration of Finland
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